PTAB

IPR2020-00777

Motherson Innovations Co Ltd v. Magna Mirrors Of America Inc

Key Events

Petition

petition

Title: Exterior Rearview Mirror Assembly
Brief Description: The ’648 patent is directed to an exterior rearview mirror assembly for a vehicle featuring an electrically-operable, multi-axis adjustment mechanism. The core invention involves a reflective mirror element that is fixedly attached to the mirror housing, causing the element and housing to move in tandem during adjustment.

Prior Art Relied Upon: Lupo (U.K. Patent Application GB 2,244,965).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Lupo, by itself, rendered the challenged claims obvious. Lupo was said to disclose an external rearview mirror for a motor vehicle with a multi-axis adjustment mechanism. This mechanism comprised a drive assembly with two electric motors that adjusted the orientation of a hollow outer body (the mirror head) and an attached reflective plate about two distinct axes (a substantially-vertical axis and a substantially-horizontal axis). Petitioner contended this structure met all limitations of independent claim 1, including the reflective element being fixedly attached to the mirror head and moving in tandem to adjust the driver's rearward field of view.
- Motivation to Combine (for §103 grounds): This ground relied on a single reference. Petitioner asserted that adjusting the driver's rearward field of view was the inherent and obvious purpose of an adjustable exterior mirror like the one disclosed in Lupo.

Prior Art Relied Upon: Lupo (U.K. Patent Application GB 2,244,965) and McCabe (Patent 7,255,451).
Core Argument for this Ground:
- Prior Art Mapping: This ground combined the base mirror assembly from Lupo with features from McCabe. Petitioner argued McCabe taught an electro-optic or electrochromic reflective element assembly, which could include features like a front glass substrate with a rounded perimeter edge. This combination was asserted to meet the limitations of dependent claims requiring an electrochromic element (claim 19) or a rounded edge (claim 2).
- Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine McCabe’s well-known electro-optic technology with Lupo’s mirror assembly. The motivation was to provide the mirror with a dimming capability to reduce driver distraction from bright external light, such as headlights from a trailing vehicle. This was presented as a known solution to a known problem.
- Expectation of Success: The combination was characterized as a simple substitution of one known type of mirror element (standard) with another (electrochromic) to achieve the predictable benefit of reduced glare.

Prior Art Relied Upon: Tsuyama (Patent 6,270,227).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner presented Tsuyama as an alternative primary reference that disclosed all elements of the challenged claims. Tsuyama was said to teach a remote-controlled mirror apparatus with a multi-axis adjustment mechanism. The mechanism used a power unit with two motors to actuate advance-retract rods, tilting the mirror body (reflective element) and mirror holder (mirror head) about two oblique axes. Petitioner asserted that Tsuyama’s mirror body was fixedly attached to the mirror holder via tape and bonding, causing them to move together, thus meeting the key limitations of claim 1.
- Motivation to Combine (for §103 grounds): This ground relied on a single reference. Petitioner argued Tsuyama’s disclosure of adjusting the mirror to widen the driver’s field of view met the functional limitations of the claims.
Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 4 and 18 over combinations of Lupo, Tsuyama, and McCabe, as well as a ground challenging numerous claims over Tsuyama in view of McCabe. These arguments relied on similar rationales, such as adding adhesive bonding (from Tsuyama) or electrochromic features (from McCabe) to a base mirror assembly.

"Fixedly attached": Petitioner proposed this term be construed to mean "securely fastened, either directly or indirectly, and not readily detachable." This construction was argued as critical to show that prior art disclosing a reflective element attached to a housing—which is in turn attached to an adjustment bracket—meets the claim limitation.
"Yaw" and "Roll": Petitioner proposed construing "roll" as "a rotation about a main axis" and "yaw" as "a rotation about a vertical axis perpendicular to the main axis." These definitions were used to map the rotational movements described in the prior art (e.g., about substantially-horizontal and substantially-vertical axes) to the specific claim terms.
"Non-orthogonally": Petitioner proposed this term means "intersecting at any angle that is not 90 degrees." This was used to argue that prior art disclosing axes that are "substantially" perpendicular (e.g., 89 degrees) would meet the limitation for non-orthogonal axes.

Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be improper because the primary prior art references, Lupo and Tsuyama, were not cited or considered during the original prosecution of the ’648 patent. While McCabe was listed as a reference, it was never used by the Examiner in any rejection. Therefore, Petitioner contended that the arguments and prior art combinations presented in the petition were being considered by the Office for the first time.

Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-13 and 15-36 of the ’648 patent as unpatentable.